Trouble for Christian Louboutin’s “Red Sole Trademark” in India
By Kelsey Elling
I. Issue
Whether a single color, like Christian Louboutin’s red sole, can be protected by trademark law?
II. Background Information
The basic principles of trademark law are to protect a businesses’ name or brand.[1] Christian Louboutin was granted federal registration of its “Red Sole Trademark” in the United States in 2008.[2] However, this “trademark”[3] is not consistently protected. For example, in the United States, the Second Circuit held that the red sole is not inherently distinctive, but the sole has acquired second meaning.[4] The Second Circuit held that the red sole trademark is only limited to situations in which the red sole contrasts with the rest of the sole.[5] However, in the European Union, the Court of Justice held that the red sole can be protected by EU trademark law.[6] This came from the European Union’s highest court, holding that the Louboutin red sole is a color, but can be protected through trademark law, namely Article 3(1)(e)(iii) of Directive 2008/95.[7]
In contrast, the High Court of Delhi held that the red soles are not protected under India’s trademark law.[8] The reasoning behind this stems from the Trade Marks Act of 1999 in which “a single color is incapable of being a trademark.”[9] The Court in India did not buy Louboutin’s argument that the red sole is a distinctive mark, like the EU and the American Courts. This is the first case that the high court in India has decided on whether a color is afforded trademark protection.[10]
III. Analysis
The court decision in India differs significantly from the court decision in the EU and in the United States.[11] The main element a court looks at is whether something functions like a trademark and therefore can be protected.[12] The issue for Louboutin is whether a single color can function like a trademark.[13] In June 2018, the Court of Justice of the European Union ruled that a color can perform the essential function of a trademark.[14] However, the Delhi Court held that Section 2(m) of the Indian Trade Marks Act “prohibits a single color for being given the status of the trademark and thereby, prohibits exclusive ownership of such a trademark by a manufacturer or seller.”[15] Thus, Louboutin’s “Red Sole Trademark” goes directly against the law in India.[16]
On one hand, Louboutin’s red sole should be considered a trademark because it is a distinctive mark due to Louboutin’s widespread advertising and product placement.[17] Proponents that the red sole should be protected argue that the red sole is a position mark and should be protected.[18] Fashion-industry participants should be able to protect the distinctive features of their designs, even if the feature is a single color.[19] Louboutin has worked hard to stand out amongst other high-end shoes and many people have come to know the product because of the red sole.[20] Therefore, Louboutin should be able to protect its product. It could also be argued that Louboutin shoes have a distinct style and customers buy the product for its elite nature and uniqueness. [21] If the red sole is not protected the value of Louboutin’s brand would be decreased.[22] Furthermore, other courts, like the Court of Justice of the European Union and the Second Circuit in America, have held that the mark is distinctive and falls under trademark protection.[23] This could potentially help Louboutin if it appeals the decision in India.[24] India could also follow America’s lead, and limit Louboutin’s trademark only to shoes that use the red sole with two colors and not a monochromatic shoe.[25]
Opponents to Louboutin’s red sole being protected by trademark law because the res soles are not a separate entity from the shape of the shoe and shapes cannot be protected by trademark law.[26] India Law expressly prohibits colors from being trademarked, which is what Louboutin is trying to do.[27] Louboutin’s argument that the company has worked hard to advertise the red sole has no bearing on whether the sole can be trademarked because it is against the underlying principles of trademark law and the law in India.[28] Louboutin should not be able to stop its competitors from using the color red in their shoe designs because it would be too broad and is not distinct.[29]
IV. Conclusion
In conclusion, Louboutin’s red sole is protected in the EU, has limited protection in the United States, and has no protection in India. In India, the law expressly states that colors are not protected.
[1] See Trademarks 101: Basic Principles Every Organization Needs To Know, Intellectual Property Law Knowledge (June 11, 2015), http://www.panitchlaw.com/knowledge-center/2015/06/trademarks-101-basic-principles-every-organization-needs-to-know/.
[2] Cases of Interest: Christian Louboutin v. Yves Saint Laurent, The Fashion Law ( Oct. 6, 2016), http://www.thefashionlaw.com/learn/christian-louboutin-v-yves-saint-laurent [hereinafter Christian Louboutin Trademark].
[3] Id. Some Countries recognize that the red sole is a trademark that can be protected, while other countries do not.
[4] Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., No. 11-3303 (2d Cir. 2013).
[5] Id.
[6] Louboutin Handed a Win from the EU’s Highest Court in Latest Red Sole Battle, The Fashion Law (June 12, 2018), http://www.thefashionlaw.com/home/louboutin-handed-a-win-from-the-eus-highest-court-in-latest-red-sole-battle [hereinafter Red Sole Decision in EU].
[7] Id.
[8] Christian Louboutin’s Red Sole is Not a Valid Trademark in India, The Fashion Law (July 18, 2018), http://www.thefashionlaw.com/home/christian-louboutins-red-sole-is-not-a-valid-trademark-in-india [hereinafter Red Sole Not a Trademark in India].
[9] Id.
[10] Id.
[11] See id.
[12] See id.
[13] Id.
[14] Red Sole Decision in EU, supra note 6.
[15] Red Sole Not a Trademark in India, supra note 8.
[16] See id.
[17] See Red Sole Decision in EU, supra note 6.
[18] Id.
[19] Christian Louboutin Trademark, supra note 2.
[20] See Christian Louboutin Trademark, supra note 2.
[21] See Elizabeth Paton, Can Christian Louboutin Trademark Red Soles? An E.U Court Says No, N.Y. Times (Feb. 6, 2018), https://www.nytimes.com/2018/02/06/business/christian-louboutin-shoes-red-trademark.html.
[22] Id.
[23] Christian Louboutin Trademark, supra note 2; Red Sole Decision in EU, supra note 6.
[24] Red Sole Not a Trademark in India, supra note 8.
[25] Christian Louboutin Trademark, supra note 2.
[26] Elizabeth Paton, supra note 21.
[27] Red Sole Not a Trademark in India, supra note 8.
[28] Id.
[29] See id.